national
arbitration forum
DECISION
Victoria's Secret Stores Brand Management, Inc. v. none none
Claim
Number: FA0907001274391
PARTIES
Complainant is Victoria's Secret Stores Brand Management, Inc. (“Complainant”), represented by Melise
R. Blakeslee, of McDermott Will & Emery LLP, Washington, D.C.,
USA. Respondent is none none (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <victoriassecretblog.com>, registered
with Wild West Domains, Inc.
PANEL
The undersigned certifies that he has
acted independently and impartially and, to the best of his knowledge, has no
known conflict in serving as Panelist in this proceeding.
The Honorable
Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to
the National Arbitration Forum electronically on July 17, 2009;
the National Arbitration Forum received a hard copy of the Complaint on July 20, 2009.
On July 20, 2009,
Wild West Domains, Inc. confirmed by
e-mail to the National Arbitration Forum that the <victoriassecretblog.com>
domain name is registered with Wild West
Domains, Inc. and that Respondent is the current registrant of the
name. Wild
West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On July 23, 2009,
a Notification of Complaint and Commencement of Administrative Proceeding (the
"Commencement Notification"), setting a deadline of August 12, 2009
by which Respondent could file a response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent's registration as technical, administrative and billing contacts,
and to postmaster@victoriassecretblog.com
by e-mail.
Having received no response from
Respondent, the National Arbitration Forum transmitted to the parties a
Notification of Respondent Default.
On August 18, 2009, pursuant to
Complainant's request to have the dispute decided by a single-member Panel, the
National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr.
(Ret.) as Panelist.
Having reviewed the communications
records, the Administrative Panel (the "Panel") finds that the
National Arbitration Forum has discharged its responsibility under Paragraph
2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the
"Rules") "to employ reasonably available means calculated to
achieve actual notice to Respondent."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the National
Arbitration Forum's Supplemental Rules and any rules and principles of law that
the Panel deems applicable, without the benefit of any response from
Respondent.
RELIEF SOUGHT
Complainant requests that the domain
name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A.
Complainant makes the following assertions:
1. Respondent’s
<victoriassecretblog.com>
domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.
2. Respondent
does not have any rights or legitimate interests in the <victoriassecretblog.com> domain name.
3. Respondent
registered and used the <victoriassecretblog.com>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Victoria's Secret Stores Brand Management, Inc., offers womens’
lingerie and other apparel, and personal care and beauty products, under its VICTORIA’S
SECRET mark. The United States Patent
and Trademark Office (“USPTO”) has issued a trademark registration for the VICTORIA’S SECRET mark
(Reg. No. 1,146,199 issued Jan. 20, 1981) to Complainant to be used in connection
with its retail business.
Respondent registered the <victoriassecretblog.com>
domain name on December
12, 2005. The disputed
domain name resolves to a website displaying links and advertisements for third
party, commercial websites, some of which operate in direct competition with
Complainant.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to
"decide a complaint on the basis of the statements and documents submitted
in accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable."
In view of Respondent's failure to submit a response, the
Panel shall decide this administrative proceeding on the basis of Complainant's
undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the
Rules and draw such inferences it considers appropriate pursuant to paragraph
14(b) of the Rules. The Panel is
entitled to accept all reasonable allegations and inferences set forth in the
Complaint as true unless the evidence is clearly contradictory. See Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb.
Forum July 31, 2000) (holding that the respondent’s failure to respond allows
all reasonable inferences of fact in the allegations of the complaint to be
deemed true); see also Talk City,
Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a
response, it is appropriate to accept as true all allegations of the
Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must
prove each of the following three elements to obtain an order that a domain
name should be cancelled or transferred:
(1) the
domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
(2) Respondent
has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad
faith.
Identical and/or Confusingly Similar
The Panel finds that Complainant has established rights in
the VICTORIA’S
SECRET mark (Reg. No. 1,146,199 issued Jan. 20, 1981) pursuant to Policy ¶ 4(a)(i) via its registration of the mark with the USPTO. See Victoria's Secret Stores Brand Mgmt., Inc. v.
Machuszek, FA 945052 (Nat. Arb.
Forum May 7, 2007)
(finding that “Complainant has established rights in the VICTORIA’S
SECRET mark through [multiple] registrations [with the USPTO] under Policy
¶ 4(a)(i).”); see
also Paisley
Park Enters. v.
Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had
established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through
registration of the mark with the USPTO).
The <victoriassecretblog.com>
domain name consists of Complainant’s VICTORIA’S
SECRET mark with the omissions of the space and apostrophe, and the additions
of the word “blog” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the omissions of the
space and apostrophe from Complainant’s mark and the addition of a gTLD are
irrelevant to an analysis under Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb.
Forum Sept. 27,
2002) (“[I]t is a well established principle that generic top-level
domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Gurney’s Inn Resort & Spa Ltd.
v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and
spaces between words are not significant in determining the similarity of a
domain name and a mark because punctuation and spaces are not reproducible in a
domain name.”). Further, the Panel finds
that the addition of a generic word renders the disputed domain name
confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See
Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing
similarity where the domain name in dispute contains the identical mark of the
complainant combined with a generic word or term). Therefore, the Panel finds that the <victoriassecretblog.com> domain name
is confusingly similar to Complainant’s VICTORIA’S
SECRET mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Pursuant to Policy
¶ 4(a)(ii), Complainant must first establish a prima
facie case that Respondent has no rights or legitimate interests in the <victoriassecretblog.com> domain name. If
the Panel finds that Complainant’s allegations establish such a prima facie case,
the burden shifts to Respondent to show that it does indeed have rights or
legitimate interests in the disputed domain name pursuant to the guidelines in
Policy ¶ 4(c). The Panel finds
that Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no
rights or legitimate interests in the <victoriassecretblog.com>
domain name pursuant to Policy ¶ 4(a)(ii). Since
no response was submitted in this case, the Panel may presume that Respondent
has no rights or legitimate interests in the <victoriassecretblog.com> domain name.
However, the Panel will still examine the record in consideration of the
factors listed in Policy ¶ 4(c). See
Domtar, Inc. v. Theriault.,
FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a
complainant has made out a prima facie case
in support of its allegations, the burden shifts to respondent to show that it
does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the
Policy.”); see also G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent. Respondent’s failure to respond means that Respondent has
not presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”).
The Panel finds no evidence in the record suggesting that
Respondent is commonly known by the <victoriassecretblog.com>
domain name. Complainant asserts that
Respondent has no license or agreement with Complainant authorizing Respondent
to use the VICTORIA’S
SECRET mark, and the WHOIS information identifies Respondent as “none
none.” Thus, Respondent has not
established rights or legitimate interests in the disputed domain name under
Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also Victoria’s Secret v.
Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (“Given the Complainants’
established use of their famous VICTORIA’S
SECRET marks it is unlikely that the Respondent is commonly known by either
[the <victoriasecretcasino.com> or <victoriasecretcasino.net>]
domain name.”).
Respondent is using the <victoriassecretblog.com> domain name to provide links to third-party websites, some of which
directly compete with Complainant.
Respondent’s use of a domain name that is confusingly similar to
Complainant’s VICTORIA’S SECRET mark to
redirect Internet users interested in Complainant’s products to websites that compete
with Complainant is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii). See TM
Acquisition Corp. v. Sign Guards, FA
132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the
respondent’s diversionary use of the complainant’s marks to send Internet users
to a website which displayed a series of links, some of which linked to the
complainant’s competitors, was not a bona fide offering of goods or
services); see also Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb.
10, 2003) (holding that the respondent’s use of the disputed domain
name to host a series of hyperlinks and a banner advertisement was neither a bona
fide offering of goods or services nor a legitimate noncommercial or fair
use of the domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Respondent is using the <victoriassecretblog.com>
domain name, which was registered on December 12, 2005, to resolve to a website
containing links to third-party websites, some of which directly compete with
Complainant. The Panel finds Respondent
is using the disputed domain
name to disrupt Complainant’s business by diverting Internet users to
Complainant’s competitors. This is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller,
D2000-0297 (WIPO June
12, 2000) (finding that the respondent has diverted business from
the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also
EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the
respondent registered and used the domain name <eebay.com> in bad faith
where the respondent has used the domain name to promote competing auction
sites).
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
third-party websites. Because
Respondent’s domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark, Internet users accessing Respondent’s <victoriassecretblog.com> domain name may become confused as to Complainant’s
affiliation with the resulting website.
The Panel therefore finds that Respondent’s use of the <victoriassecretblog.com> domain name constitutes bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co.
v. Celebrex Drugstore, FA 123933 (Nat. Arb.
Forum Nov. 21,
2002) (finding that the respondent registered and used the domain
name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was
using the confusingly similar domain name to attract Internet users to its
commercial website); see also AltaVista Co.
v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy
¶ 4(b)(iv) where the respondent’s domain name resolved to a website that
offered links to third-party websites that offered services similar to the
complainant’s services and merely took advantage of Internet user mistakes).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the
ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victoriassecretblog.com> domain name
be TRANSFERRED from Respondent to Complainant.
The
Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 31, 2009
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